I have this trademark pending – I am selling my merchandise with my logo Bonsai Sheroes on backpacks, sticker, tee shirts, music etc online and in retail stores. I want to trademark the name Bonsai Sheroes.
The attorney at the office trademark told me that:
Specimen – Failure to Function - Ornamental
Registration was refused because the applied-for mark, as used on the initial specimen of record, was merely a decorative or ornamental feature of the goods; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.
The attorney said that I needed to submit the statement that I “Advance the application to seek registration on the supplemental register.”
Is this correct and am I stating it correctly?
First, don['t use real names on this public site. Second. hire a lawyer for help. Applying for trademarks seems easy, but as you've seen, it's not that easy. The USPTO examining attorney is in effect your judge and jury, and although they refer to what other examining attorneys have done, and they may ask their supervisors for guidance, you should treat them as your judge.
You want 5 trademarked classes of goods and services, so you need to submit specimens showing your use of the trademark in each class. It's not clear that submitted an appplication for 5 calsses of goods and services, or 5 specimens - it doesn't sound like it, and if you didn't, you can't now. And you can't use the trademark as an ornament, meaning it can't just be a design that decorates the front of a t-shirt, it has to be on an advertisement, a hangtag, a label, etc., which shows the trademark as the source of the goods or services. These are basic trademark concepts.
The examining attorney suggested the Supplemental Register because your initial submission failed to qualify for registration on the much better Principal Register, and these Supplemental Register marks don't get the many benefits of registration available on the Principle Register, although they're better than no registration at all.
Since your USPTO fees are non-refundable, see a TM lawyer NOW, to see if it's possible to respond to the examining attorney's Office Action and salvage your application.
Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
Intellectual Property Law Attorney
You must to either accept registration on the Supplemental Register or hire an attorney to argue that your mark does, in fact, deserve to be placed on the Principal Register.
The decision is a big one -- if you amend your application to seek placement on the Supplemental Register that's an admission that your mark is NOT inherently distinctive. That admission has dramatic consequences when it comes time to enforce your trademark against infringers.
In short, if branding your products with the Bonsai Sheroes mark is key to your business plans then you need to hire a trademark attorney to handle the registration process. If it's not, then placing the mark on the Supplemental Register can be a useful thing to do. ONLY your own trademark attorney can help you make that call. Good luck.
I would add that if you are left with no choice but to register on the Supplemental Register, your mark can develop distinctiveness over time and you may be able to later move to the Primary Register. Talk to an attorney now before making any decisions. The wrong one will be costly.
[This communication is intended as general information and not specific legal advice, and this communication does not create an attorney-client relationship.]
Mitchell P. Goldstein
Richmond, VA 23230